Trademarks’ Influence on Game Design
Darius Gambino
Darius Gambino is an Intellectual Property attorney with over 20 years of practice counseling clients worldwide on the protection of intellectual property. Mr. Gambino is a member of Saul Ewing's Video Gaming and Esports Practice Group, and is an avid gamer. He is also the creator and host of the firm's "Lawyers With Game" series of YouTube videos, in which he and others from the firm's Video Gaming and Esports Group discuss legal issues in the gaming and esports industries. Mr. Gambino is the co-author of the book, "Trade Dress: Evolution, Strategy & Practice" (Saul Ewing).
Mr. Gambino explained to us the legal issues that arise when video game developers use other parties’ trademarked and copyrighted items in their games, referencing the Humvee case and the Kyle Hanagami Fortnite emote case about choreography.
Games sell their narratives not just in story or action, but by involving people in richly detailed and realistic surroundings. Whether it is the gritty city landscape of Grand Theft Auto, the ravaged war zones of Call of Duty, or The Godfather games' period-accurate appearance, what they are playing is often the feeling that what they're playing is nearly real.
That realism doesn't occur by accident. It depends on developers being able to take inspiration from real-life analogues, from Humvee-style warfare vehicles to Bell helicopters. But developers must properly use these inspirations or they can end up getting sued for attempting to create a realistic game environment. That is where trademark law, and the Rogers test in particular, comes in as a necessity—not just for studios but also for players who want immersive, expressive game worlds.
The Rogers Test
The Rogers Test was established by the US Court of Appeals for the Second Circuit to balance First Amendment rights and trademark protections. Famous actress and dancer Ginger Rogers sued a filmmaker whose film Ginger and Fred about two fictious dancers who emulated Ms. Rogers and Fred Astaire for violating her trademark and other legal rights (Wikipedia). The court noted, "[t]his appeal raises a conflict between Rogers' right to protect her iconic name and the other people's right to speak freely in their own creative works…. Especially, we must decide whether Rogers may enjoin use of title Ginger and Fred for a purely fictional movie having only oblique relation to Rogers and Astaire" (Rogers v. Grimaldi, 875 F.2d 994).
The Rogers Test has since been cited in a wide range of trademark cases. The Rogers Test consists of two requirements that must be met. First, the trademark used must be pertinent to the art/media that is being produced - for example, the use of a Bobcat Excavator for a video game based on demolition. Second, the use of a trademark must not be misleading to the public as to the source or content of the artwork. The game must not appear to suggest a Bobcat endorsement of the game through the used of a Bobcat trademark. The Rogers Test provides a legal standard that producers of platforms such as video games must follow when creating works of art that use real-life trademarks. This is important for video game players as it allows games to be realistic and immersive. The Rogers test enables developers to use familiar items and promote immersion in a way that bypasses problems in legality. We shall see more of this in some of the examples below.
AM General v. Activision Blizzard
AM General designs and sells Humvee vehicles, often for military use. Activision’s Call of Duty is a one of the most successful video game franchises, and it uses Humvee vehicles in the game. The Southern District Court of New York analyzed AM General’s trademark infringement and other claims by examining the use of Humvees in Call of Duty and applying the Rogers test. The court found that Activision’s use of Humvees had artistic relevance by adding a sense of realism to a game simulating modern warfare. The court also found that Activision’s use of the trademarked Humvees did not confuse consumers into thinking that Humvee endorsed Call of Duty. While AM General presented a survey showing that 16% of consumers were confused about its association with the game, the court considered this as "some" confusion, which must be weighed against First Amendment protection. The court denied Humvee's claims, finding there was no evidence that Call of Duty misled consumers. As the court noted, video game realism has artistic merit, which supports the use of military vehicles like Humvees (Camillo, 2020).
This issue is not just important for video game developers, but also for players. Imagine having played in a modern warfare simulator inhabited by generic, fictional vehicles. This would take away from immersion. When judges acknowledge realism in video games as protected expression, they are not just helping video game studios, but are protecting the player's ability to get immersed in a realistic environment.
Other Cases
EA tested the line with Battlefield 3, when it used Bell helicopters without a license. In the case, Electronic Arts, Inc. v. Textron, Inc., et al, EA argued that it was entitled to a First Amendment right to depict real military helicopters as an expressive work without a license. The helicopters were realistic, but the court applied the Rogers Test and held that use by EA could lead people into believing that Bell had sponsored the game (Kane, 2013). This case shows the balance video game developers have to tread. While realism enhances gameplay, the distinction between inclusion and endorsement is subtle. If players feel that the inclusion of a trademark constitutes sponsorship, the immersion of the game could actually backfire, decreasing realism and trust.
In another case, EA referred to a Tommy gun as a “Dillinger” within The Godfather games, invoking the gangster legend. The John Dillinger estate sued for trademark infringement, but the court applied the Rogers Test and decided in favor of EA. The court found that EA’s use of the Dillinger name in a game that took place in the 1930s was artistically relevant, and that the Dillinger estate presented no evidence that consumers were misled or confused about the source or content of EA’s game (Kane, 2013). The imaginative use of historical and cultural allusions adds depth to a game world without infringing on legal boundaries. For gamers, it's a matter of ending up with a generic mob-shooter game or a game that really captures the tone and flavor of the time.
Conclusion
Video games achieve their highest potential when they model plausible realities and worlds that the player can fully immerse themselves in. The use of trademarks, brands, and real-world references often contributes significantly to achieving this immersion. Legal standards like the Rogers test guide game developers in appropriate use of these elements. Intellectual Property law goes far beyond mere ownership; it involves permission to craft interesting and creative worlds. That is what essentially sustains the constant interest of players.
References
Bizofan. “Guide: What Animators Need to Know about Animation Copyright.” Business of Animation, Business of Animation, 29 Apr. 2022, https://businessofanimation.com/guide-to-animation-copyright-for-freelancers/.
Camillo, Nicholas, et al. (April 14, 2020). In Legal Warfare Over HUMVEE Trademarks, the First Amendment Goes Beyond the Call of Duty in Dismissing AM General’s Claims. https://www.finnegan.com/en/insights/blogs/incontestable/in-legal-warfare-over-humvee-trademarks-the-first-amendment-goes-beyond-the-call-of-duty-in-dismissing-am-generals-claims.html
Circular 30 Works Made for Hire, https://www.copyright.gov/circs/circ30.pdf. Accessed 15 May 2025.
Goldman, Eric. “Humvee Can’t Stop Depictions of Its Vehicles in the ‘call of Duty’ Videogame-AM General v. Activision Blizzard.” Technology & Marketing Law Blog, 3 Apr. 2020, https://blog.ericgoldman.org/archives/2020/04/humvee-cant-stop-depictions-of-its-vehicles-in-the-call-of-duty-videogame-am-general-v-activision-blizzard.htm.
Kane, Sean (2013). Evolving Case Law on the Fair Use of Famous Trademarks in Video Games. https://www.pillsburylaw.com/a/web/4384/AlertAugust2013IPEvolvingCaseLawontheFairUseofFamousTrademarksin.pdf. Accessed 15 May 2025.
Saul Ewing LLP. “Darius C. Gambino.” https://www.saul.com/professionals/darius-c-gambino. Accessed 15 May 2025.
Wikipedia (n.d.). Rogers v. Grimaldi. https://en.wikipedia.org/wiki/Rogers_v._Grimaldi
Zemanick, Steve. “Using Third-Party Trademarks in a Video Game: Infringement or Not?” Four Reasons Legal, 8 Aug. 2023, https://www.fourreasonslegal.com/using-third-party-trademarks-in-a-video-game-infringement-or-not/.